Title : Small Business Innovation Research (SBIR) -- Phase I Grant General
Conditions
Type : Grant Conditions
NSF Org: OD / OGC
Date : November 1, 1995
File : sbiri
NATIONAL SCIENCE FOUNDATION
ARLINGTON, VA 22230
Small Business Innovation Research (SBIR) -- Phase I
Grant General Conditions
______________________________________________________________________________________________________________________
Table of Contents
Article Subject
1. Type of Award
2. Grantee Responsibilities
3. Significant Project Changes
a. Change in Objective or Scope or Transfer
of the Research Effort
b. Change of Principal Investigator
4. Subcontract Requirements
5. Grant Reporting Requirements
6. Payments
7. Rights in Technical Data
8. Copyrightable Material
9. Publications
10. Information Collection
11. Patent Rights
12. Project Income
13. Records Retention and Access
14. Site Visits
15. Suspension or Termination
16. Termination Review Procedure
17. Nondiscrimination
18. National Security: Classifiable Results
Originating Under NSF Grants
19. Animal Welfare
20. Research Involving Recombinant DNA
Molecules
21. Human Research Subjects
22. Resolution of Conflicting Conditions
OTHER CONSIDERATIONS
23. Liability
24. Activities Abroad
25. Sharing of Findings, Data and Other Research Products
1. Type of Award
The grant letter specifies a pre-determined fixed amount of NSF support for
the project described in the referenced grant proposal. NSF anticipates that
the full award amount will be paid without regard to the actual cost
subsequently incurred. However, payment of this amount is subject to
compliance with the award terms and conditions, including Article 5, Grant
Reporting Requirements, Article 6, Payments, and NSF's acceptance of the
reports submitted by the Grantee under Article 5. On the basis of its review
of these reports and/or other pertinent information, NSF reserves the right to
suspend or terminate the award, if NSF determines that such action is
appropriate. This award is not subject to the Federal Commercial Cost
Principles (48 CFR Part 31), except insofar as provided under Article 15,
Suspension or Termination and Article 16, Termination Review Procedure of the
General Conditions. If estimated total expenditures are significantly less
than the award amount, NSF reserves the right to renegotiate the amount of
this award.
2. Grantee Responsibilities
The Grantee has full responsibility for the conduct of the project or activity
supported under this award and for adherence to the award conditions. A
minimum of two-thirds of the research and/or analytical effort must be
performed by the Grantee. Although the Grantee is encouraged to seek the
advice and opinion of the Foundation on special problems that may arise, such
advice does not diminish the Grantee's responsibility for making sound
scientific and administrative judgments and should not imply that the
responsibility for operating decisions has shifted to the Foundation. The
Grantee is responsible for notifying NSF about (1) any allegation of
scientific misconduct that it concludes has substance and requires an
investigation in accordance with NSF misconduct regulations published at 45
CFR 689, and (2) any significant problems relating to the scientific,
technical, administrative or financial aspects of the grant.
3. Significant Project Changes
The Grantee is required to notify NSF in writing and obtain appropriate
approvals whenever there are significant changes in the project or its
direction as set forth below:
a. Change in Objectives or Scope or Transfer of the Project Effort. No
change in the phenomenon or phenomena under study or the objectives of
the project stated in the proposal or agreed upon modifications thereto or
transfer of the project effort may be undertaken without the written approval
of NSF. NSF approval of such changes will be by an amendment to the grant
signed by the NSF Grants Officer.
b. Absence or Change of Principal Investigator. If a named Principal
Investigator or Project Director (PI/PD) plans to or becomes aware that he or
she will (1) devote substantially less effort to the work than anticipated in
the approved proposal, (2) sever his or her connection with the Grantee
organization, or (3) be absent for a continuous period of three months or
more, or otherwise relinquish active direction of the project, he or she shall
advise in writing the SBIR program officer and the Grantee's Authorized
Organizational Representative. Action appropriate to the situation will be
initiated consistent with standard NSF policies. Such changes are subject to
NSF approval or other appropriate action including termination .
4. Subcontract Requirements
Any proposed subcontract over $5,000, other than those identified in the
approved budget, must be forwarded to the NSF Grants Officer for approval.
The proposed subcontract must be approved prior to its issuance. See also
Article 2, Grantee Responsibilities, regarding the minimum amount of effort
required to be completed by the Grantee.
5. Grant Reporting Requirements
Payment of the grant amount is conditioned upon the Grantee's acceptance and
compliance with the award terms and conditions which include expending the
approximate person-months proposed and delivery to NSF and its acceptance of
required reports. The results of the Grantees' efforts under this grant are
to be documented in the form of a final report which includes a project
summary as specified in the Program Solicitation, Small Business Innovation
Research. The final report (due within 15 days following the end of the
performance period) must be submitted to the SBIR program officer for review
and acceptance using the SBIR Report Cover Sheet. An NSF Form 98A, Final
Project Report is also required and due no later than 90 days after the
expiration date of the award.
6. Payments
Unless otherwise stated in the grant letter, payments will be made by NSF as
follows: One-third will be made approximately two weeks after receipt of the
NSF SBIR Award Request for Initial Payment Form and the SF 3881 by the NSF
Division of Financial Management but not before the award effective date,
one-third 3 months after the effective date of the award, and the remainder
upon receipt and acceptance by NSF of a satisfactory final report and
financial certification (included on the SBIR Report Cover Sheet). Request
for initial advance payments should be made within 30 days of the date of the
award, and must be made using an NSF SBIR Award Request for Initial Payment
form. Failure to submit an acceptable final report will result in withholding
of payment and may be grounds for suspension or termination of the award.
7. Rights in Technical Data
The Grantee may retain rights in technical data, including software developed
under this grant, except that the Government shall have the r right to use
such data for Governmental purposes. The Final Technical Report delivered
under this grant, including technical data, may be made available to the
public by the Government, except for that portion of the report containing
technical data properly identified and marked as set forth below. To the
extent permitted by law, the Government will not release properly marked
technical data, such as data relating to an invention or software, outside the
Government, not be released outside the Government, except for evaluation
purposes, for a period of four years from the expiration of the Phase II grant
or of the Phase I grant, when no Phase II award is made, without approval of
the Grantee. . The Grantee must properly identify such data and set it off on
a separate page in any submission to the Foundation. Such data must be
clearly labeled as proprietary and marked with a legend similar to the
following:
"The following is information which (name of Grantee) requests not be released
to persons outside the Government, except for purposes of evaluation, for a
period of four years from the expiration date of Grant No. (the NSF grant
number) or the expiration date of a follow-on Phase II grant if awarded,
whichever is later."."
In addition to the rights vested in the Government to use such technical data
during the four year period mentioned above, the Government shall retain a
royalty free, irrevocable, world-wide license to use the data after the
conclusion of the four year period whether or not the Grantee has sought or
obtained patent protection or claimed copyright protection.
8. Copyrightable Material
a. Subject writing means any material that:
(1.) is or may be copyrightable under Title 17 of the United States
Code; and
(2.) is produced by the Grantee or its employees in the performance
of work under this grant.
Subject writings include such items as reports, books, journal articles,
software, databases, sound recordings, video tapes, and video discs.
b. Copyright Ownership, Government License. Except as otherwise specified
in the grant or by this paragraph, the Grantee may own or permit others to own
copyright in all subject writings. The Grantee agrees that if it or anyone
else does own copyright in a subject writing, the Federal government will have
a non-exclusive, nontransferable, irrevocable, royalty-free license to
exercise or have exercised for or on behalf of the United States throughout
the world all the exclusive rights provided by copyright which rights will be
subject to Article 7, Rights in Technical Data. Such license, however, will
not include the right to sell copies or photo records of the copyrighted works
to the public.
c. Grantee Action to Protect Government Interests. The Grantee agrees to
acquire, through written agreement or an employment relationship, the ability
to comply with the requirements of the preceding paragraphs and, in
particular, to acquire the ability to convey rights in a subject writing to a
foreign participant if directed by the Foundation under the previous
paragraph. The Grantee further agrees that any transfer of copyright or any
other rights to a subject writing, by it or anyone whom it has allowed to own
such rights, will be made subject to the requirements of this article.
9. Publications
a. Acknowledgment of Support. The Grantee is responsible for assuring
that an acknowledgment of NSF support will appear in any publication of any
material based on or developed under this project, in the following terms:
"This material is based upon work supported by the National Science Foundation
under Grant No. (NSF grant number)."
b. Disclaimer. The Grantee is responsible for assuring that every
publication of material based on or developed under this grant, except
scientific articles or papers appearing in scientific, technical or
professional journals, contains the following disclaimer:
"Any opinions, findings, and conclusions or recommendations expressed in this
material are those of the author(s) and do not necessarily reflect the views
of the National Science Foundation." c. Copies for NSF. The Grantee is
responsible for assuring that two copies of every publication of material
based on or developed under this grant, clearly labeled with the grant number
and other appropriate identifying information, are sent to the cognizant NSF
Program Officer promptly after publication.
d. Metric System. Grantees are encouraged to use the metric system of
weights and measures in all reports and publications resulting from this NSF
grant.
10. Information Collection
Information collection activities performed under this grant are the
responsibility of the Grantee, and NSF support of the project does not
constitute NSF approval of the survey design, questionnaire content, or
information collection procedures. The Grantee shall not represent to
respondents that such information is being collected for or in association
with the National Science Foundation or any other Government agency without
the specific written approval of such information collection plan or device by
the Foundation. However, this requirement is not intended to preclude mention
of NSF support of the project in response to an inquiry or acknowledgment of
such support in any publication of this information.
11. Patent Rights
Unless otherwise provided in the grant letter, the Patent Rights clause
included in Appendix A will be used applies. 51.3. The Grantee will include
that clause in all subawards for experimental, developmental, or research
activities.
12. Project Income
a. Definition. Project income refers to that portion of gross revenues,
including royalties, received by or accruing to the Grantee through activities
undertaken under this grant, whether received during or after the grant
period. It includes, but is not limited to, proceeds from the sale,
licensing, lease, rental, or other arrangement for the use, release,
dissemination, or other disposal of copyrightable or noncopyrightable
materials, properties, and inventions developed or produced under the grant.
Income also includes any interest earned on all such revenues and proceeds.
b. Standard Treatment. Unless otherwise specified in the grant, project
income received or accruing to the Grantee during the period of this grant
shall be retained and added to the funds committed to the project by the
Foundation and used to further project objectives. The Grantee shall have no
obligation to the Foundation with respect to
(1) license fees and royalties for copyrighted material, patents,
patent applications, trademarks, and inventions or
(2) project income received after the period of this grant.
c. Records Retention. The Grantee is required to retain appropriate
financial and other records relating to project income earned during the grant
period and for three years beyond the end of the grant period.
13. Records Retention and Access
a. Records Retention. Financial and technical records, supporting
documentation, statistical records and other records pertinent to this grant
shall be retained by the Grantee for a period of 3 years from submission of
the NSF Form 98A, Final Project Report, as specified in Article 5.
b. Availability. The Grantee shall make available at its office at all
reasonable times all books, documents, papers, and records pertinent to this
award and the financial and other records relating to project income required
by Article 12, for examination or reproduction, until 3 years after final
payment under this grant. In addition,
(1.) If this grant is completely or partially terminated, the
records relating to the work terminated shall be made available for 3 years
after any resulting final termination settlement; and
(2.) Records that relate to appeals, litigation, or the settlement
of claims arising out of the performance of the project shall be retained
until such appeals, litigation, or claims have been disposed of.
c. The Grantee may transfer computer data in machine readable form from
one reliable computer medium to another. The Grantee's computer data
retention and transfer procedures shall maintain the integrity, reliability,
and security of the original data. The Grantee's choice of form or type of
materials described in paragraph a. above of this article affects neither the
Grantee's obligations nor the Government's rights under this article.
d. Notwithstanding any other provision in this Article, the Director of
the National Science Foundation and the Comptroller General of the United
States, or any of their duly authorized representatives, shall have access to
any pertinent books, documents, papers, and records of the Grantee
organization, to make examinations, excerpts and transcripts.
14. Site Visits
The Foundation, through authorized representatives, has the right, at all
reasonable times, to make site visits to review project accomplishments and
management control systems and to provide such technical assistance as may be
required. If any site visit is made by the Foundation on the premises of the
Grantee or a subcontractor under the grant, the Grantee shall provide and
shall require its subcontractors to provide all reasonable facilities and
assistance for the safety and convenience of the Government representatives in
the performance of their duties. All site visits and evaluations shall be
performed in such a manner as will not unduly delay the work.
15. Suspension or Termination
a. The grant may be suspended or terminated in whole or in part, when the
Foundation believes that the Grantee has materially failed to comply with the
terms and conditions of the grant, including failure to provide satisfactory
reports as required under Article 5, Grant Reporting Requirements, or when the
Foundation has other reasonable cause, or for any reason by mutual agreement
between the Foundation and the Grantee upon the request of either party, or
when the parties cannot mutually agree to a termination.
b. Normally, action by the Foundation to suspend or terminate a grant
will be taken only after the Grantee has been informed by the Foundation of
any deficiency on its part and given an opportunity to correct it; but the
Foundation may immediately suspend or terminate the grant without notice when
it believes such action is reasonable to protect the interests of the
Government.
c. No costs incurred during a suspension period or after the effective
date of a termination will be allowable, except those costs which, in the
opinion of the Foundation, the Grantee could not reasonably avoid or
eliminate, or which were otherwise authorized by the suspension or termination
notice, provided such costs would otherwise be allowable under the terms of
the grant and 48 CFR Part 31.
d. Within 30 days of the termination date, the Grantee will furnish a
summary of progress under the grant and an itemized accounting of costs
incurred prior to the termination date or pursuant to c., above. Final
allowable costs under a termination settlement shall be in accordance with the
terms of the grant, including this article, and the commercial cost principles
contained at 48 CFR Part 31, giving due consideration to the progress under
the grant. In no event will the total of NSF payments under a terminated grant
exceed the grant amount, or the NSF pro rata share when cost sharing was
anticipated, whichever is less.
e. A notice of termination other than by mutual agreement and/or the
final settlement amount may be subject to review pursuant to Article 19,
Termination Review Procedure. 660.
16. Termination Review Procedure
a. A request for review of a notice of termination should be addressed to
the Director, Division of Grants and Agreements, National Science Foundation,
4201 Wilson Boulevard, Arlington VA, 22230. It must be postmarked no later
than 30 days after the postmarked date of such notice.
b. The request for review must contain a full statement of the Grantee's
position and the pertinent facts and reasons in support of such position.
c. Review of a notice of termination will be conducted in accordance with
standard NSF policies and procedures, as appropriate, which will be provided
to the grantee upon request.Grant Policy Manual 69
d. Pending resolution of the request for review, the notice of
termination shall remain in effect.
17. Nondiscrimination
a. The grant and any program assisted thereby are subject to the
provisions of Title VI of the Civil Rights Act of 1964 (42 U.S.C. 2000d), the
regulations issued pursuant thereto by the Foundation (45 CFR 611), and the
Assurance of Compliance which the Grantee has filed with the Foundation. No
person on the basis of race, color, national origin, or handicap shall be
excluded from participation in, be denied benefits of, or otherwise be
subjected to discrimination under the grant. In addition, if the project
involves an education activity or program, as defined by Title IX of the
Education Amendments of 1972 (20 U.S.C. 1681-1686), no person on the basis of
sex shall be excluded from participation in the project. Further, by
acceptance of the grant, the Grantee assures the Foundation that it will
comply with Section 504 of the Rehabilitation Act of 1973 (29 U.S.C. 794) and
the Foundation's implementing regulations (45 CFR 605).
b. The Grantee shall obtain from each organization that applies to be or
serves as a subrecipient, subgrantee or subcontractor under the grant (for
other than the provision of commercially available supplies, materials,
equipment, or general support services) an Assurance of Compliance with Title
VI of the Civil Rights Act of 1964. Civil Rights Act assurances may be filed
with the Grantee in one of two ways: (1) by written notification that the
appropriate Assurance of Compliance form has been executed and filed either
with the Foundation or the U.S. Department of Health and Human Services; or
(2) by executing and filing with the Grantee an NSF Assurance of Compliance
Form. The Grantee shall obtain assurances pursuant to Section 504 of the
Rehabilitation Act of 1973, as amended, from subrecipients by incorporating
into the subagreement a provision that acceptance of the subagreement
constitutes assurance.
c. The Grantee agrees to comply with the Age Discrimination Act of 1975
(42 U.S.C. 6101 et seq.) as implemented by the Department of Health and Human
Service regulations at 45 CFR 90 and the regulations of the Foundation at 45
CFR 617. In the event the Grantee passes on NSF financial assistance to
subrecipients, this provision shall apply to the subrecipients, and the
instrument under which the Federal financial assistance is passed to the
subrecipient shall contain a provision identical to this provision.
18. National Security: Classifiable Results Originating Under NSF Grants
a. The Foundation does not have original classification authority and
does not normally support classified projects. It therefore does not expect
that results of NSF-supported research projects will be classifiable, except
in very rare instances.
b. Executive Order 12356 (47 Federal Register 14874 (1982)) states that
basic scientific research information not clearly related to the national
security may not be classified (Section 1.6(b)). Nevertheless, some
information concerning (among other things) scientific, technological, or
economic matters relating to the national security or cryptology may require
classification (Section 1.3(a)).
c. There may therefore be cases when an NSF Grantee originates
information during the course of an NSF-supported project that the Grantee
believes requires classification under Executive Order 12356 (Section 1.2(e)).
d. In such a case, the Grantee has the responsibility promptly to:
(1.) submit the information directly to the U.S. Government agency
with appropriate subject matter interest and classification authority, or, if
uncertain which agency should receive the information, to the Director of the
Information Security Oversight Office, General Services Administration;
(2.) protect the information as though it were classified until the
Grantee is informed that the information does not require classification, but
not longer than thirty (30) days after receipt by the agency with subject
matter interest or by the General Services Administration; and
(3.) notify the cognizant NSF Program Officer.
e. The Executive Order requires the agency with appropriate subject
matter interest and classification authority to decide within thirty (30) days
whether to classify the material. If it determines the information to require
classification, the Grantee shall cooperate with that agency, the Foundation,
or other appropriate agencies in securing all related project notes and
papers.
f. If the information is determined to require classification, the
performing organization may wish or need to discontinue the project.
19. Animal Welfare
Any Grantee performing research on vertebrate animals shall comply with the
Animal Welfare Act, 7 U.S.C. 2131 et seq.) and the regulations promulgated
thereunder by the Secretary of Agriculture (9 CFR, 1.1-4.11) pertaining to the
humane care, handling, and treatment of vertebrate animals held or used for
research, teaching, or other activities supported by Federal awards. The
Grantee is expected to ensure that the guidelines described in NIH Publication
No. 90-23 (Revised 1990), Guide for the Care and Use of Laboratory Animals,
are followed; and to comply with the "U.S. Government Principles for the
Utilization and Care of Vertebrate Animals Used in Testing, Research, and
Training" (included as an appendix to the NIH Guide).
NOTE--The Grantee may request registration of its facility and a current
listing of licensed dealers from the Regional Office of the Animal and Plant
Health Inspection Service (APHIS), USDA, for the region in which its research
facility is located. The location of the appropriate APHIS Regional Office, as
well as information concerning this program, may be obtained by contacting the
Chief Staff Officer, Animal Care Staff, USDA/APHIS, Federal Center Building,
Hyattsville, MD 20782.
20. Research Involving Recombinant DNA Molecules
(Applicable only to grants supporting research involving recombinant DNA
molecules.)
NSF grantees performing research involving recombinant DNA molecules that
falls within the scope of the Guidelines for Research Involving Recombinant
DNA Molecules (NIH Guidelines )(Federal Register/Vol 59, No. 127, July 5,
1994, 34495-34547), as amended, shall comply with the Guidelines including the
procedural requirements and any subsequent revisions as they are published in
the Federal Register. Inquiries concerning this requirement and its
implementation should be addressed to:
Division of Molecular and Cellular Biosciences National Science
Foundation 4201 Wilson Boulevard Arlington, VA 22230
21. Human Research Subjects
The Grantee is responsible for the protection of the rights and welfare of any
human subjects involved in research, development and related activities
supported by this grant. The Grantee agrees to comply with the NSF regulation,
entitled, "Protection of Human Subjects, 45 CFR 690."
22. Resolution of Conflicting Conditions
Should there be any inconsistency between any special conditions contained in
the grant and these Grant General Conditions, the special conditions in the
grant shall control.
Should there be any inconsistency between these Grant General Conditions, any
special conditions contained in the grant, and any NSF guides, brochures,
etc., cited or included by reference in the grant, the matter should be
referred to the NSF Grants Officer for guidance.
OTHER CONSIDERATIONS
23. Liability
The Foundation cannot assume any liability for accidents, illnesses, or claims
arising out of any work supported by a grant or for unauthorized use of
patented or copyrighted materials. The Grantee institution is advised to take
such steps as may be deemed necessary to insure or protect itself, its
employees and its property.
24. Activities Abroad
The Grantee should assure that grant activities carried on outside the United
States are coordinated as necessary with appropriate Government authorities
and that appropriate licenses, permits or approvals are obtained prior to
undertaking proposed activities. The Foundation does not assume responsibility
for Grantee compliance with the laws and regulations of the country in which
the work is to be conducted.
25. Sharing of Findings, Data, and Other Research Products
a. NSF expects significant findings from research and education
activities it supports to be promptly submitted for publication, with
authorship that accurately reflects the contributions of those
involved. It expects investigators to share with other researchers, at
no more than incremental cost and within a reasonable time, the data,
samples, physical collections, and other supporting materials created
or gathered in the course of the work. It also encourages Grantees to
share software and inventions or otherwise act to make the innovations
they embody widely useful and usable.
b. Adjustments and, where essential, exceptions may be allowed to
safeguard the rights of individuals and subjects, the validity of
results, or the integrity of collections or to accommodate legitimate
interests of investigators.
Appendix A Appendix A
PATENT RIGHTS (APRIL, 1992)
a. Definitions.
1. INVENTION means any invention or discovery which is or may
be patentable or otherwise protectable under
title 35 of the U.S.C., to any novel variety of plant which is
or may be protected under the Plant Variety Protection Act (7
U.S.C. §§2321 et seq.).
2. SUBJECT INVENTION means any invention of the grantee
conceived or first actually reduced to practice in the
performance of work under this grant, provided that in the
case of a variety of plant, the date of determination (as
defined in section 41(d)) must also occur during the period of
grant performance.
3. PRACTICAL APPLICATION means to manufacture in the case of a
composition or product, to practice in the case of a process
or method, or to operate in the case of a machine or system;
and, in each case, under such conditions as to establish that
the invention is being utilized and that its benefits are to
the extent permitted by law or Government regulations
available to the public on reasonable terms.
4. MADE when used in relation to any invention means the
conception or first actual reduction to practice of such
invention.
5. NON-PROFIT ORGANIZATION means a domestic university or
other institution of higher education or an organization of
the type described in section 501(c)(3) of the Internal
Revenue Code of 1954 (26 U.S.C.USC §501(c)) and exempt from
taxation under section 501(a) of the Internal Revenue Code (26
U.S.C.USC §501(a)) or any domestic non-profit scientific or
educational organization qualified under a State non-profit
organization statute.
b. Allocation of Principal Rights. The grantee may retain the
entire right, title, and interest throughout the world to each subject
invention subject to the provisions of this Patent Rights clause and
35 U.S.C.USC §203. With respect to any subject invention in which the
grantee retains title, the Federal Government shall have a
non-exclusive, nontransferable, irrevocable, paid-up license to
practice or have practiced for or on behalf of the U.S. the subject
invention throughout the world. If the grant indicates it is subject
to an identified international agreement or treaty, the National
Science Foundation (NSF) also has the right to direct the grantee to
convey to any foreign participant such patent rights to subject
inventions as are required to comply with that agreement or treaty.
c. Invention Disclosure, Election of Title and Filing of Patent
Applications by Grantee.
1. The grantee will disclose each subject invention to
NSF within two months after the inventor discloses it in
writing to grantee personnel responsible for the
administration of patent matters. The disclosure to NSF shall
be in the form of a written report and shall identify the
grant under which the invention was made and the inventor(s).
It shall be sufficiently complete in technical detail to
convey a clear understanding of the nature, purpose,
operation, and, to the extent known, the physical, chemical,
biological or electrical characteristics of the invention. The
disclosure shall also identify any publication, on sale or
public use of the invention and whether a manuscript
describing the invention has been submitted for publication
and, if so, whether it has been accepted for publication at
the time of disclosure. In addition, after disclosure to NSF,
the grantee will promptly notify NSF of the acceptance of any
manuscript describing the invention for publication or of any
on sale or public use planned by the grantee.
2. The grantee will elect in writing whether or not to
retain title to any such invention by notifying NSF within two
years of disclosure to NSF. However, in any case where
publication, on sale, or public use has initiated the one-year
statutory period wherein valid patent protection can still be
obtained in the U.S., the period for election of title may be
shortened by NSF to a date that is no more than 60 days prior
to the end of the statutory period.
3. The grantee will file its initial patent application
on an invention to which it elects to retain title within one
year after election of title or, if earlier, prior to the end
of any statutory period wherein valid patent protection can be
obtained in the U.S. after a publication, on sale, or public
use. The grantee will file patent applications in additional
countries or international patent offices within either ten
months of the corresponding initial patent application, or six
months from the date when permission is granted by the
Commissioner of Patents and Trademarks to file foreign patent
applications when such filing has been prohibited by a Secrecy
Order.
4. Requests for extension of the time for disclosure to NSF,
election, and filing under subparagraphs 1., 2., and 3. may,
at the discretion of NSF, be granted.
d. Conditions When the Government May Obtain Title. The grantee
will convey to NSF, upon written request, title to any subject
invention:
1. if the grantee fails to disclose or elect the subject
invention within the times specified in paragraph c. above, or
elects not to retain title; provided that NSF may only request
title within 60 days after learning of the failure of the
grantee to disclose or elect within the specified times;
2. in those countries in which the grantee fails to file
patent applications within the times specified in paragraph c.
above, but prior to its receipt of the written request of NSF,
the grantee shall continue to retain title in that country; or
3. in any country in which the grantee decides not to continue
the prosecution of any application for, to pay the maintenance
fees on, or defend in a reexamination or opposition proceeding
on, a patent on a subject invention.
e. Minimum Rights to Grantee.
1. The grantee will retain a non-exclusive royalty-free
license throughout the world in each subject invention to which the
Government obtains title, except if the grantee fails to
disclose the subject invention within the times specified in
paragraph c. above. The grantee's license extends to its
domestic subsidiaries and affiliates, if any, within the
corporate structure of which the grantee is a party and
includes the right to grant sublicenses of the same scope to
the extent the grantee was legally obligated to do so at the
time the grant was awarded. The license is transferable only
with the approval of NSF except when transferred to the
successor of that part of the grantee's business to which the
invention pertains.
2. The grantee's domestic license may be revoked or modified
by NSF to the extent necessary to achieve expeditious
practical application of the subject invention pursuant to an
application for an exclusive license submitted in accordance
with applicable provisions at 37 CFR §404. This license will
not be revoked in that field of use or the geographical areas
in which the grantee has achieved practical application and
continues to make the benefits of the invention reasonably
accessible to the public. The license in any foreign country
may be revoked or modified at discretion of NSF to the extent
the grantee, its licensees, or its domestic subsidiaries or
affiliates have failed to achieve practical application in
that foreign country.
3. Before revocation or modification of the license, NSF
will furnish the grantee a written notice of its intention to
revoke or modify the license, and the grantee will be allowed
thirty days (or such other time as may be authorized by NSF
for good cause shown by the grantee) after the notice to show
cause why the license should not be revoked or modified. The
grantee has the right to appeal, in accordance with applicable
regulations in 37 CFR §404 concerning the licensing of
Government-owned inventions, any decision concerning the
revocation or modification of its license.
f. Grantee Action to Protect Government's Interest.
1. The grantee agrees to execute or to have executed and
promptly deliver to NSF all instruments necessary to:
(i) establish or confirm the rights the Government has
throughout the world in those subject inventions for which the
grantee retains title; and
(ii) convey title to NSF when requested under
paragraph d. above, and to enable the Government to obtain
patent protection throughout the world in that subject
invention.
2. The grantee agrees to require, by written agreement, its
employees, other than clerical and non-technical employees, to
disclose promptly in writing to personnel identified as
responsible for the administration of patent matters and in a
format suggested by the grantee each subject invention made
under this grant in order that the grantee can comply with the
disclosure provisions of paragraph c. above, and to execute
all papers necessary to file patent applications on subject
inventions and to establish the Government's rights in the
subject inventions. The disclosure format should require, as
a minimum, the information requested by paragraph c.1. above.
The grantee shall instruct such employees through the employee
agreements or other suitable educational programs on the
importance of reporting inventions in sufficient time to
permit the filing of patent applications prior to U.S. or
foreign statutory bars.
3. The grantee will notify NSF of any decision not to
continue prosecution of a patent application, pay maintenance
fees, or defend in a reexamination or opposition proceeding on
a patent, in any country, not less than 30 days before the
expiration of the response period required by the relevant
patent office.
4. The grantee agrees to include, within the specification of
any U.S. patent application and any patent issuing thereon
covering a subject invention, the following statement: "This
invention was made with Government support under (identify the
grant) awarded by the National Science Foundation. The
Government has certain rights in this invention."
5. The grantee or its representative will complete,
execute and forward to NSF a confirmation of a License to the
U.S. Government within two months of filing any domestic or
foreign patent application.
6. The grantee or its representative will forward to NSF
a copy of any U.S. patent covering a subject invention within
two months after it is issued.
g. Subcontracts.
1. The grantee will include this Patent Rights clause,
suitably modified to identify the parties, in all
subcontracts, regardless of tier, for experimental,
developmental or research work. The subcontractor will retain
all rights provided for the grantee in this Patent Rights
clause, and the grantee will not, as part of the consideration
for awarding the subcontract, obtain rights in the
subcontractors' subject inventions.
2. In the case of subcontracts, at any tier, when the
prime award by NSF was a contract (but not a grant or
cooperative agreement), NSF, subcontractor, and contractor
agree that the mutual obligations of the parties created by
this Patent Rights clause constitute a contract between the
subcontractor and the Foundation with respect to those matters
covered by this Patent Rights clause.
h. Reporting on Utilization of Subject Inventions. The grantee
agrees to submit on request periodic reports no more frequently than
annually on the utilization of a subject invention or on efforts at
obtaining such utilization that are being made by the grantee or its
licensees or assignees. Such reports shall include information
regarding the status of development, date of first commercial sale or
use, gross royalties received by the grantee and such other data and
information as NSF may reasonably specify. The grantee also agrees to
provide additional reports in connection with any march-in proceeding
undertaken by NSF in accordance with paragraph j. of this Patent
Rights clause. As required by 35 U.S.C.USC §202(c)(5), NSF agrees it
will not disclose such information to persons outside the Government
without the permission of the grantee.
i. Preference for United States Industry. Notwithstanding any
other provision of this Patent Rights clause, the grantee agrees that
neither it nor any assignee will grant to any person the exclusive
right to use or sell any subject invention in the U.S. unless such
person agrees that any products embodying the subject invention or
produced through the use of the subject invention will be manufactured
substantially in the U.S. However, in individual cases, the
requirement for such an agreement may be waived by NSF upon a showing
by the grantee or its assignee that reasonable but unsuccessful
efforts have been made to grant licenses on similar terms to potential
licensees that would be likely to manufacture substantially in the
U.S. or that under the circumstances domestic manufacture is not
commercially feasible.
j. March-in Rights. The grantee agrees that with respect to any
subject invention in which it has acquired title, NSF has the right in
accordance with procedures at 37 CFR §401.6 and NSF regulations at 45
CFR §650.13 to require the grantee, an assignee or exclusive licensee
of a subject invention to grant a non-exclusive, partially exclusive,
or exclusive license in any field of use to a responsible
applicant or applicants, upon terms that are reasonable under the
circumstances and if the grantee, assignee, or exclusive licensee
refuses such a request, NSF has the right to grant such a license
itself if NSF determines that:
1. such action is necessary because the grantee or assignee
has not taken or is not expected to take within a reasonable
time, effective steps to achieve practical application of the
subject invention in such field of use;
2. such action is necessary to alleviate health or safety
needs which are not reasonably satisfied by the grantee,
assignee, or their licensees;
3. such action is necessary to meet requirements for public
use specified by Federal regulations and such requirements are
not reasonably satisfied by the grantee, assignee, or
licensee; or
4. such action is necessary because the agreement
required by paragraph i. of this Patent Rights clause has not
been obtained or waived or because a licensee of the exclusive
right to use or sell any subject invention in the U.S. is in
breach of such agreement.
k. Special Provisions for Grants with Non-profit Organizations.
If the grantee is a non-profit organization, it agrees that:
1. rights to a subject invention in the U.S. may not be
assigned without the approval of NSF, except where such
assignment is made to an organization which has as one of its
primary functions the management of inventions, provided that
such assignee will be subject to the same provisions as the
grantee;
2. the grantee will share royalties collected on a
subject invention with the inventor, including Federal
employee co-inventors (when NSF deems it appropriate) when the
subject invention is assigned in accordance with 35 U.S.C.USC
§202(e) and 37 CFR §401.10;
3. the balance of any royalties or income earned by the
grantee with respect to subject inventions, after payment of
expenses (including payments to inventors) incidental to the
administration of subject inventions, will be utilized for the
support of scientific or engineering research or education;
and
4. it will make efforts that are reasonable under the
circumstances to attract licensees of subject inventions that
are small business firms and that it will give preference to a
small business firm if the grantee determines that the small
business firm has a plan or proposal for marketing the
invention which, if executed, is equally likely to bring the
invention to practical application as any plans or proposals
from applicants that are not small business firms; provided
that the grantee is also satisfied that the small business
firm has the capability and resources to carry out its plan or
proposal. The decision whether to give a preference in any
specific case will be at the discretion of the grantee.
However, the grantee agrees that the Secretary of Commerce may
review the grantee's licensing program and decisions regarding
small business applicants, and the grantee will negotiate
changes to its licensing policies, procedures or practices
with the Secretary when the Secretary's review discloses that
the grantee could take reasonable steps to implement more
effectively the requirements of this paragraph k.4. l.
Communications. All communications required by this Patent Rights
clause should be sent to: Patent Assistant Office of the General
Counsel National Science Foundation 4201 Wilson Boulevard Arlington,
VA 22230
[END OF CLAUSE]
29. Sharing of Findings, Data, and Other Research Products
a. NSF expects significant findings from research and education
activities it supports to be promptly submitted for publication, with
authorship that accurately reflects the contributions of those
involved. It expects investigators to share with other researchers, at
no more than incremental cost and within a reasonable time, the data,
samples, physical collections, and other supporting materials created
or gathered in the course of the work. It also encourages Grantees to
share software and inventions or otherwise act to make the innovations
they embody widely useful and usable.
b. Adjustments and, where essential, exceptions may be allowed to
safeguard the rights of individuals and subjects, the validity of
results, or the integrity of collections or to accommodate legitimate
interests of investigators.
SBIR-I (1/963/94) 1
SBIR-I (1/96)